Eternit NV

Patent Trials and Appeals Board

Jan 18, 2022

2021000098 (P.T.A.B. Jan. 18, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/309,291 11/07/2016 Philippe Hellemans 1806-11 PCT US 1314 28249 7590 01/18/2022 DILWORTH & BARRESE, LLP 1000 WOODBURY ROAD SUITE 405 WOODBURY, NY 11797 EXAMINER GRACE, KELSEY C ART UNIT PAPER NUMBER 1742 NOTIFICATION DATE DELIVERY MODE 01/18/2022 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): usptomail@dilworthbarrese.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PHILIPPE HELLEMANS __________ Appeal 2021-000098 Application 15/309,291 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, DONNA M. PRAISS, and JENNIFER R. GUPTA, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134 the final rejection of claims 1-4, 21, 22, and 24-26. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. Appellant’s invention is directed to a process of making fiber cement sheets or panels (Spec. 1:3-5). Claim 1 is illustrative: 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Eternit NV. (Appeal Br. 3). Appeal 2021-000098 Application 15/309,291 2 1. A process for providing a fiber cement product which is free of any visible effects of efflorescence, comprising a combination of the following steps in the following order: providing an uncured fiber cement product consisting essentially of fiber and cement; air curing said uncured fiber cement product under ambient conditions; air drying said cured fiber cement product after completion of curing, in a separate step and in a ventilated furnace at a temperature between about 70°C and 105°C, to obtain a humidity of said cured fiber cement product being less than or equal to about 8%w; and upon completion of said air drying, directly abrasive blasting at least part of the surface of said dried fiber cement product, wherein said uncured fiber cement product is obtained using a Hatschek process and the abrasive blasting excludes sandblasting. (Appeal Br. 23). REFERENCES Name Reference Date Merkley et al. US 6,872,246 B2 Mar. 29, 2005 Meudt DE 3546363 A1 July 2, 1987 Endl WO 2009021253 A1 Feb. 19, 2009 Diephaus DE 1020080202054 A1 Dec. 3, 2009 S. lkai et al., Asbestos-Free Technology with New High Toughness Polypropylene (PP) Fibers in Air-Cured Hatschek Process, Construction and Building Materials, July 17, 2009, Volume 24, Issue 2, Pages 171- 180. Appellant appeals the following rejections: 1. Claims 1-4, 21, 22, and 24 are rejected under 35 U.S.C. § 103 as unpatentable over Ikai in view of Meudt, Diephaus, and Endl. Appeal 2021-000098 Application 15/309,291 3 2. Claims 25 and 26 are rejected under 35 U.S.C. § 103 as unpatentable over Ikai in view of Meudt, Diephaus, Endl, and Merkley. 3. Claims 1-4, 21, 22, and 24 are rejected under 35 U.S.C. § 103 as unpatentable over Merkley in view of Meudt, Diephaus, and Endl. FINDINGS OF FACT & ANALYSIS We review the appealed rejection for reversible error based on the arguments and evidence presented by Appellant. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”). The Examiner’s findings and conclusions regarding Ikai, Meudt, Diephaus, and Endl with regard to claim 1 are located on pages 3-5 of the Final Action. The Examiner’s findings and conclusions regarding Ikai, Merkley, Meudt, Diephaus, and Endl are located on pages 7-10 of the Final Action. Appellant argues that fiber cement and concrete are different products such that a person of ordinary skill in the art would not have combined the teachings of Meudt and Diephaus directed to concrete with Ikai’s fiber cement products (Appeal Br. 13, 15). Appellant contends that the transitional phrase “consisting essentially of” in claim 1 excludes concrete products (i.e. cement products containing aggregate) from the claim (Appeal Br. 14). Appellant argues a person of skill in the art would not have Appeal 2021-000098 Application 15/309,291 4 combined the references related to fiber cement with references related to concrete (Appeal Br. 18). The Examiner responds that prior art related to fiber cement products and concrete are analogous in that both products involve hydration curing (Ans. 17). Appellant focuses on the presence of aggregate in concrete as the basis for the assertion that transitional phrase “consisting essentially of” excludes concrete products (Appeal Br. 17). Although Appellant contends that “consisting essentially of” excludes aggregate containing concrete products, Appellant has not shown that the presence of aggregate would have affected the basic and novel characteristics of the claimed invention and so would have been excluded by the transitional language. In re De Lajarte, 337 F.2d 870, 873 (CCPA 1964). The basic and novel characteristic of the fiber cement product produced by the process recited in claim 1 is the absence of efflorescence (Appeal Br. 12). Appellant has not shown that the presence of aggregate in a fiber cement product would have affected the ability of the process to achieve this absence of efflorescence. Appellant argues Meudt teaches air-drying and curing concrete in a single step but does not teach to cure first and then air-dry the concrete as recited in claim 1 (Appeal Br. 15-16). Appellant argues curing and drying are two different steps in that curing requires sufficient water to ensure the cement hardens (Appeal Br. 16-17). Appellant contends that drying removes the excess water present in the cement after curing (Appeal Br. 16). Appellant contends that a person of ordinary skill would not have been motivated to first cure a fiber cement product and afterwards dry the product to a residual moisture content which is much lower that the starting value absent hindsight (Appeal Br. 19). We agree. Appeal 2021-000098 Application 15/309,291 5 The Examiner finds that Meudt on page 2 of the translation discloses “air drying said cured fiber cement product after completion of curing . . . in a separate step and in a ventilated furnace at a temperature between 70°C and 105°C.” (Ans. 17). Meudt teaches on page 2 of the translation “the present invention is to provide a process which prevents the blooming of the concrete moldings during drying and curing, but also after renewed moistening after drying and curing.” Meudt further discloses that the finished molded article is subjected to elevated temperature after shaping (Translation 2). The Examiner does not explain how these disclosures teach or suggest the claim limitation that the fiber cement is air cured at ambient conditions followed by air drying the cured fiber cement product after completion of curing in a separate step at a temperature between about 70°C and 105°C. Rather, Appellant has the better position that Meudt appears to teach curing and drying in a single step (Translation 2). The Examiner has not provided sufficient factual findings to support that Meudt in combination with Ikai, Diephaus, and Endl, Meudt in combination with Ikai, Merkley, Diephaus, and Endl, or Meudt in combination with Merkley, Diephaus, and Endl would have suggested the curing step at ambient conditions followed by an air-drying step as recited in claims 1 and 25. We reverse the Examiner’s § 103 rejections (1) to (3). DECISION Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4, 21, 22, 24 103 Ikai, Meudt, Diephaus, Endl 1-4, 21. 22, 24 Appeal 2021-000098 Application 15/309,291 6 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 25, 26 103 Ikai, Merkley, Meudt, Diephaus, Endl 25, 26 1-4, 21, 22, 24-26 103 Merkley, Meudt, Diephaus, Endl 1-4, 21, 22, 24-26 Summary 1-4, 21, 22, 24-26 REVERSED